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This article is written by Janhavi Sitaram Dudam, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from Lawsikho.com. Here she discusses “an Overview on the kinds of Relief provided for Violation of Geographical Indication In India”.

Introduction

Geographical Indications Protection is eminently important and mandatory for an Agro-based industry like India. Geographical indications (GI) have emerged in the recent past as a significant type of the issue in Intellectual Property Rights (IPR) within the Indian context.

A Geographical indication is an indication used to identify that a given product originates in a particular geographical area which possesses qualities or reputation or other characteristics due to that area or origin. Most commonly, a geographical indication includes name of the place of origin of that particular good. For example, “Darjeeling Tea” indicates the origin of Tea from Darjeeling, “Kanjeevaram Silk” denotes the origin of Silk from Kanjeepuram in Southern India. Agricultural products usually have qualities deriving from their place of production and identified by local factors such as climate and soil.

Geographical Indication helps a producer distinguish their goods from competitive market products, and create awareness for their products, often at a premium price.

In India, the legal framework for GI protection has recently been developed.

Let us discuss in detail what kind of protection is available for infringement of geographical indication in India and kinds of relief awarded by the Indian courts.

Protection for the holder of Geographical signs when no particular GI protection legislation is available in India

The present geographical indication in India is governed by the Geographical Indication of Goods (Registration & Protection) Act, 1999 and the Rules on Geographical Indication of Goods (Registration and Protection), 2002.

Before this act, there was no separate law specifically applicable to GI protection. However, there were alternative ways which could prevent the misuse of GIs:

  1. Passing of Action by the courts; and
  2. Certification trademarks.

Among abovementioned laws, In India, “Darjeeling Tea” was the most common geographical name covered under the Certification Trademark scheme prior to the GI Act. A certification mark is known as a mark administered by a proprietor who certifies the products as to their origin, content, manufacturing mode or service efficiency, quality, accuracy or other characteristics, and thus allows the use of the mark. In addition to the Darjeeling Tea, India has recently established a “Silk Mark” to certify the authenticity of silk textiles in India and can be marketed if the product meets the quality standards.

In India, Infringement of GIs have been governed by common law principles, which entitled the aggrieved person to lodge an action of ‘Passing off’ for protection of his right. This action has maintained by the Indian courts for protection of GIs in one of the leading case Scotch Whisky Association v. Pravara Sahakar Shakar Karkhana Ltd.on 18 July, 1991.

In this case, the plaintiff Scotch Whisky Association, a corporation registered under the United Kingdom’s Companies Act initiated the passing off action against the defendant- Pravara Sahakar Shakar Karkhana Ltd. – a producer of various Indian whisky brands such as ‘blended scotch whisky’ or ‘blended with Scotch’ under the different brand names, ‘Drum Beater’ and ‘God Tycoon.’ In this lawsuit, the Bombay High Court held that plaintiff had sufficient interest to restrain the defendant’s passing off of Indian Whisky brand to prevent damage to Scotch whisky’s reputation and goodwill. The defendant passed their product off as a blended scotch whisky which they were not in fact. So, the court granted temporary injunction. The defendant used the words ‘Blended with Scotch’ and indulged in colourable imitation and unfair trade in an attempt to gain unequal profits by appropriating the goodwill of the plaintiff. The defendant was prohibited from advertising or offering for sale or distribution of whisky, which is not Scotch whisky in any territory.

From the aforementioned judgement, it is clear that the Indian judiciary has repeatedly extended the shield of legal protection to GIs even in the absence of the any legislation in effect at that time.

Analysis of Geographical Indication Act

There was no statute in India prior to the enactment of the GI Act for the protection of geographical indication. This act aims at providing for registration and protection of geographical signs relating to goods. It excludes unauthorized user from exploitation of geographical signs.

Unless a geographical indication is covered in the country of origin, there is no requirement for other countries to provide mutual protection under the arrangement provided for in the Article 22 of the TRIPs. In comparison, India would be required to protect goods imported from other countries that provide such protection. Considering the above circumstances, extensive legislation for identification and proper protection of geographical indication is deemed necessary.

However, the Parliament adopted Geographical Indication of Goods (Registration and Protection) Act, 1999 in order to provide better protection for geographical indications that received Indian President’s assent on 30th December 1999.

Some Relevant Provisions of the Act

Definition under TRIPS

Article 22 (1) of TRIPS defines ‘Geographical Indication’ as “indications which identify a good as originating in the territory of a member or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin”.

Definition under The Geographical Indications of Goods (Registration and Protection) Act, 1999

Sec 2 (e)“geographical indication” in relation to goods, means an indication which identifies such goods as agricultural goods, natural goods or manufactured goods or originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other and in case where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be.

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Which goods are covered under Geographical indication Act?

Sec 2(f) defines the term “goods” means any-

  1. Agricultural goods;
  2. Natural goods;
  3. Manufactured goods or;
  4. Any goods or handicraft or of industry and includes foodstuff.

Rights available to the registered user

Sec 21 of chapter IV of the act states the following rights:

  1. The registered user shall be entitled solely to use the geographical indication in respect of the products for which the geographical indication is registered. However, all terms and restrictions levied in the registration itself shall be subject to this exclusive right to use.
  2. The registered owner or permitted user of the geographical indication shall be entitled to obtain relief in respect of infringement.

Infringement of geographical indication

Section 22 of the act states the laws relating to infringement of geographical indication and this section has to be read with sec 2 of article 22 of TRIPS Agreement which says, in respect of geographical indication, members should provide the legal protection to interested parties to prevent:

  1. use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin which confused the public;
  2. any use which includes an act of ‘unfair competition’ within the meaning of article 10 of the Paris Convention (1967).

Relief granted by Indian courts for infringement of Geographical Indications

Sec 67 of the act states the Relief provided by Indian courts for violation of geographical indication may be broadly divided into two categories:

Civil remedies

  • Injunction

The injunction may either be interim injunction or permanent injunction granted for the disclosure of records, the protection of infringing items, documentation or other facts relating to the subject-matter of the suit. An injunction is granted to restrain the defendant from disposing his assets which may adversely affect the ability of the plaintiff to recover damages, costs or other pecuniary remedies that may finally be granted to the plaintiff.

  • Damages or accounts of profits

The court shall not award relief by way of compensation (other than nominal damages) or accounts of profits to the plaintiff in any case where the defendant satisfies the court in the violation proceedings that he was ignorant at the time he started to use the geographical sign in the suit, and had no reason to believe that the plaintiff’s geographical sign was on the registry; and when he became aware of the existence and nature of the right of the plaintiff in the geographical indication, he immediately stop to use the geographical indication for the benefit for which it was registered.

  • Delivery-up of the infringing labels and indications for destruction or forfeiture of goods that bear false representation of an existing G.I.

Criminal Treatment

Judicial remedies are more effective than civil remedies since the former can be easily disposed of. Chapter VIII of the Act deals with such crimes and punishments.

Sec 38 to 44 of the Act provides punitive responsibility for violation of various laws relating to the following geographical indications.

  • Falsifying and falsely applying geographical indications to goods.
  • Selling goods to which false geographical indications is applied.

Punishment- Imprisonment 6 months to 3 years + fine not less that Rs. 50000 but may extend to Rs. 2,00,000.

  • Falsely representing a geographical indication as registered.
  • Improperly describing a place of business as connected with the geographical indication’s registry.
  • Falsification of entries in the registry.

For the second and for every subsequent offence –

Imprisonment of not less than 1yr, extend to 3 yrs. + fine not less than Rs. 1,00,000 but may extend to Rs. 2,00,000.

Case Study

This case study relates to the protection of Darjeeling tea provided by geographic indication (GI) Act at domestic level as well as International level. It tells the story of the illegal use and registration by Japanese companies already licensed by the Tea Board of India of ‘Darjeeling and Darjeeling logo’ in Japan.

India is the world’s largest tea manufacturer, producing about 31 percent of the world’s favourite hot drink with a total output of 846 million kg in 2002.

Among the teas grown in India, Darjeeling tea provides distinctive consistency and taste characteristics, as well as over a century of global reputation. Broadly speaking, there are two aspects that have let to such an excellent and distinctive taste, namely geographical origin and manufacturing.

  • Tea Board of India vs. Mitsui Norin KK, Japan

In this case, India’s Tea Board objected to application for ‘Divine Darjeeling’ in Class 30 (Darjeeling tea, coffee and cocoa produced in Darjeeling, India). The opposition was primarily for three reasons-

  1. ‘divine’ is a laudatory word and therefore the symbol for which protection is sought is merely ‘Darjeeling’ which is simply not distinguishable;
  2. ‘Divine Darjeeling’ is deceptive in so far as ‘Darjeeling coffee and cocoa’ is concerned, because Darjeeling district does not grow coffee and cocoa;
  3. Darjeeling tea qualify as a geographical indication in compliance with international convention, including TRIPS, and should be protected as Japan is a member of TRIPS.

Particularly on the ground that the ‘Divine Darjeeling’ mark as a whole was not misleading or deceptive of the nature of the products, the Japan Patent Office Opposition Board rejected the invalidation action brought by the Tea Board of India. However, the non-use cancellation action succeeded because the licensed proprietor was unable to report sufficient evidence to prove the use of the mark in Japan.

Conclusion

Thus, The Tea Board of India has faced a range of obstacles, threats and challenges to protect the ‘Darjeeling’ and the Darjeeling logo in Japan. The main intention behind the use of geographical indication is to facilitate commerce by identifying authentic products of quality to the customer and also defending them from counterfeiting.

References


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